Judge Refuses to Dismiss Trademark Case

TAMPA (CN) – A federal judge in Florida denied an online media company’s motion to dismiss trademark infringement claims from a competing business, finding the marks in question were indeed confusing. ROCA Lab Inc. sued Boogie Media LLC for using its trademark on the websites allnaturalgastricbypass.com and betterthangastricbypass.com. Roca Labs purports to own certain federally registered marks, including “Natural Gastric Bypass,” “Gastric Bypass No Surgery,” “Roca Labs,” and “Gastric Bypass Effect.” The sites were used to market a competing weight loss product called Bystrictin. Roca claims Boogie Media used its registered marks by “publishing sales listing and promotional materials” on other sites such as Facebook.com, Youtube.com and Vimeo.com. Roca also claims Boogie continued the infringement even after being sent a cease and desist letter asking it to take down or transfer the infringing sites. In October, Roca Labs sued Boogie Media on counts of trademark infringement, cybersquatting, violating Florida’s Deceptive and Unfair Trade practices Act, and unfair competition. Boogie Media filed a motion to dismiss the claims, stating the term “gastric bypass” is common use and can not have trademark protection. It claims the word “natural” is common use as well and the names of its websites are “different sounding” from Roca Labs’ marks. However, the court found Roca Labs had a valid claim of infringement because it produced certificates of the registered marks and Boogie Media’s use of them could cause consumer confusion. “…The Court finds that Roca Labs has alleged sufficient facts regarding the confusing similarity between its marks and Boogie Media’s website domain name to survive a motion to dismiss, ” said U.S. District Judge Virginia Covington. “Roca Labs has alleged that Boogie Media ‘used the infringing domain name to divert consumers from Plaintiff’s websites to [other] websites and competing products accessible under the infringing domain name for Defendants’ commercial gain.'” Boogie Media did not dispute that it competes with Roca Labs for a common pool of online customers “in the business of selling weight loss products,” further supporting Roca’s infringement claim. Covington dismissed Boogie Media’s motion after finding Roca Labs adequately stated claims to each of the four counts in its complaint.